August 29, 2022 – In April 2021, the Supreme Court ruled Google LLC v. Oracle Am., Inc. and ruled that Google’s direct copying of 11,500 lines of software code for the Java interface (now owned by Oracle) was exempt from copyright infringement because it fell under the “fair use” exemption. (141 S.Ct. 1183 (2021)). The Java interface in question was a popular platform for programmers to write programs in Java, one of the most widely used software languages. Google immediately copied 11,500 lines of code and inserted it into code that Google had written itself.
The fair use exemption balances the interests of copyright holders with public interests by exempting certain uses (such as for parodies) from infringement. The fair use exemption is enshrined in the Copyright Act, which states that “the fair use of a copyrighted work … for purposes such as criticism, commentary, news reporting, education …, science or research, does not infringe copyright.” (17 USC §107).
The law provides four factors to consider when determining whether the fair use exemption applies: (1) the “purpose and nature of the use”; (2) the “nature of the copyrighted work;” (3) the “quantity and substantial portion of the portion used in relation to the copyrighted work as a whole;” and (4) the “effect of the use on the potential market or value of the copyrighted work.” (ID card.).
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The Supreme Court has ruled that works that are “transformative” under the first factor “are at the heart of the fair use doctrine guarantee that breathing space is provided within the limits of copyright.” (Campbell v. Acuff-Rose Music, Inc., 510, US 569, 579 (1994)). “[T]the more transformative the new work, the less will be the importance of other factors… that may weigh against a finding of fair use.
Traditionally, a work is “transformative” if it “adds something new” by “de [source material] with a new expression, meaning or message.’ (Id.). In practice, transformative power is often at the expense of fair use research. that this factor “will generally weigh in favor of fair use where … the amount of copying was linked to a valid and transformative purpose” (Google, 141 S. Ct. at 1205 (Campbell quote, 510 US at 586 – 587)).
The 2021 Google Court also discussed its transformative power. Despite Google admitting to copying 11,500 lines of code and doing so mostly for “the same reason” as the original work (i.e. to allow programmers to recall programs), the Court ruled that Google’s use of the copied code “attempts to create new create products” and “extend the use and utility of” another technology: smartphones. (Id. at 1203).
The Court noted that “Google’s new product provides programmers with a highly creative and innovative tool for a smartphone environment”, which differs from Java’s native computing environment. (ID card.). The Court said the use of Google was “consistent with that creative ‘progress’ that is the fundamental constitutional purpose of copyright itself.” (ID card.).
Many feared that Google was expanding the scope of transformative power and consequently expanding the fair use exception. Since the Google advisory was issued, there has been speculation as to whether the alleged extension of the fair use exemption would also apply to non-software cases. We may have the answer soon.
Currently, the Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, (No. 21-869), a case over whether the artwork of famed artist Andy Warhol, based on Lynn Goldsmith’s 1981 photograph of the musician Prince, is covered by the grant exception. Warhol applied his unique style to Goldsmith’s photo: resize; crop to remove Prince’s torso; changing the angle of Prince’s face; adding bright colors; changing tones, lighting and detail; and adding hand-drawn lines, outlines, and shading.
Warhol is the first non-software fair use case to go to Supreme Court after Google. The main question for the Court is whether Warhol’s work is sufficiently transformative to qualify as fair use. It is an appeal from the 2nd US Circuit Court of Appeals, which ruled that Warhol’s work was not “transformative” fair use because it “retained[ed] the essential elements of the Goldsmith Photograph” and was not “fundamentally different and new” (992 F.3d 99, 114–15 (2d Cir. 2021)).
While the 2nd Circuit found that Warhol’s “modifications can alter the Goldsmith photograph in ways that give a different impression of the subject [Prince]the Goldsmith photo remains the recognizable foundation upon which [Warhol’s] Prince Series is built.” (Id. at 115). The 2nd Circuit reasoned that “the overarching purpose and function of the two works at issue here is identical, not only in the broad sense that they were created as works of art, but also in the narrow but essential sense that they are portraits of the same person” (Id. at 114).
If the Supreme Court applies the rationale expressed in Google, many think that Warhol’s work is transformative and therefore the fair use exemption applies. Interestingly, the Google Opinion alluded to Warhol, explaining — in an unmistakable allusion to one of Warhol’s classic pieces centered on a Campbell’s soup can — that “[a]For example, n ‘artistic painting’ could be within the scope of fair use, even if it exactly replicates a copyrighted advertising logo to make a note about consumerism.” (Google, 141 S. Ct. at 1203).
But hope is not lost for those who want the Court to tighten up its transformative analysis. The Google court left a hook for non-software cases to apply a different analysis, stating that the fair use doctrine is “flexible, [and] courts must apply it in light of the sometimes conflicting aims of copyright, and that its application may differ depending on the context” (Id. at 1197).
Of particular interest here, the Google court said that “copyright protection can be stronger when the copyrighted material … has an artistic rather than a utilitarian function.” (ID card.). The Court could use this as a basis for applying a stricter transformative analysis in the present case.
Another difference between Google and Warhol: the members of the Court. Despite only 19 months having passed between the Court’s decision in Google and the argument in Warhol, there are two new judges on the Court who were not involved in Google’s decision. Neither Associate Justice Amy Comey Barrett nor Associate Justice Ketanji Brown Jackson participated in Google, but both could play a role in determining the application of the transformative analysis and fair use exception in the pending Warhol case.
One thing is certain: the case has the potential to make big waves and has the attention of many interested parties. More than three dozen amicus briefings have been submitted, including from filmmakers, professors, politicians, artists and authors. There are plea notes for both sides, as well as statements that support neither side and instead focus on different aspects of the fair use doctrine.
The Solicitor General – in conjunction with the Copyright Office – has filed a memorandum stating that the fair use exemption does not apply and requested that you join the pleadings as an amicus curiae. The court has not yet ruled on the attorney general’s request.
Argument before the Supreme Court is set for October 12, 2022.
Deirdre M. Wells and William H. Milliken are regular joint columnists on patent and IP law for Reuters Legal News and Westlaw Today.
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The opinions expressed are those of the author. They do not reflect the views of Reuters News, which is committed to integrity, independence and freedom from bias under the Trust Principles. Westlaw Today is owned by Thomson Reuters and operates independently of Reuters News.